It's my novice patent-drafter understanding that independent claims (especially the first one) should be as broad as possible without being so broad that as to easily negated by prior art of any kind – whether currently patented, previously patented, or never patented. So, some more narrow specifications (that might have originally been planned as dependent claim statements) may need to be pulled into the independent claim in order to set it apart. What's puzzling me a bit is, how far to go with that? Should I add what seems to be "just enough," or do I play it safer by pulling in more than one of what (I think) are unique distinguishing features? And is there any practical guideline for how complicated an independent claim can be? (referring specifically to how many indented statements are added following a "comprising" statement)

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There are two forces at play here. For one, you want your claim as broad as possible - simply because the broader the claim, the broader your protection. On the other hand, the examiner, in combination with the prior art has a certain limit of what they will allow.

So the "perfect" broadness of your claim would be to exactly hit the limit of what is allowable.

The cheapest and fastest prosecution would be to start with only allowable claims.

The problem is, you cannot (!) know exactly what claim will be accepted and when it is too broad. So you play a kind of guessing game with the examiner. You start your claim at a certain level of broadness where you are sure it's outside of the allowable, but not by far and then take narrowing steps until arriving at some dependent claim which is certainly allowable.

You submit that for examination and the examiner will hopefully hint to you, where the border between allowable and not allowable lies. You then iteratively try to get as close as possible.

The problem here is, if you iterate into the allowable part, your patent passes and you can't go back - so you have to approach this border from the outside, overstepping it only a little bit at the end.

If all goes well, after a few office actions you have a reasonably broad patent, didn't waste too much time/money and everyone is happy. If your patent passes with the first claims you submit, they were too narrow.

As to how complicated a claim can be - complicated normally means narrow, it can be as complicated/narrow as you want, but the thing is, you don't want that.

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    Perhaps you could emphasize more that claims can be amended (whereas the specification can't). The usual advice I've seen is err on the side of being too broad and narrow as required by the examiner. This, I think is your advice, but it isn't completely clear.
    – Eric S
    Jun 12, 2017 at 14:50
  • Thanks for those insights. It is all what I generally had come to understand anyway but having that reinforced is valuable. But regarding the idea of iterative modifications of claims: The whole process is so lengthy anyway, I am not sure I would want to drag it out even more with the attempt to get "just the perfect compromise." That might be worthwhile, if one can see into the future with some accuracy about market value, but again it's a risk vs. potential reward decision. True?
    – Charles
    Jun 12, 2017 at 19:14
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    @Charles it depends. There is (almost) no risk in stretching it out - so why not do it? If the case arises that you need a patent fast, file for a narrow divisional (or continuation or continuation in part for the US). Yes, you do pay some more fees and money for every iteration, but that's part of the investment in getting a good patent. If you don't want a good patent, why file one? I think in most situations going for a broad patent tops having one fast.
    – user18033
    Jun 12, 2017 at 20:52
  • And stretching the process out might actually give you more insight into the value of certain claims - so that's another plus. Though one shouldn't forget that an application is easier to challenge, so there's that for a con.
    – user18033
    Jun 12, 2017 at 20:53
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    @Charles My experience is you get a non-final rejection the first time through no matter how narrow the claims. It's like the examiner wants you to explain the patent to them. You might as well claim broadly.
    – Eric S
    Jun 12, 2017 at 22:09

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